Ex Parte McCullough

Board of Patent Appeals and Interferences

Oct 27, 2006

10288027 (B.P.A.I. Oct. 27, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte KEVIN A. MCCULLOUGH
______________

Appeal 2006-1502
Application 10/288,027
Technology Center 3700
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Decided: October 27, 2006
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Before GARRIS, WARREN, and GAUDETTE, Administrative Patent
Judges.

WARREN, Administrative Patent Judge.
REMAND TO THE EXAMINER
We remand the application to the Examiner for consideration and
explanation of issues raised by the record. 37 C.F.R. §41.50(a)(1) (2006);
Manual of Patent Examining Procedure (MPEP) § 1211 (8th ed., Rev. 3,
August 2005).
The record shows that Appellant amended independent claim 7 in the
Amendment filed July 26, 2004. The Examiner rejected claim 7 and
dependent claim 8 under 35 U.S.C. § 112, first paragraph, as failing to
Appeal 2006-1502
Application 10/288,027
comply with the written description requirement in the Final Action mailed
October 19, 2004. The final action also included a rejection of claims 7 and
8 under 35 U.S.C. § 103(a). In the Advisory Action mailed January 25,
2005, the Examiner denied entry of the Amendment filed December 16,
2004, which would have amended claim 7.
The two Briefs filed February 24, 2005, and June 17, 2005,
respectively, set forth only the ground of rejection under 35 U.S.C. § 103(a)
under the heading “Grounds of rejection to be reviewed on appeal.” The
Examiner held these Briefs to be non-compliant in the Office
communications mailed June 10, 2005, and August 8, 2005, respectively.
The Examiner did not indicate that the Briefs did not include the ground of
rejection under 35 U.S.C. § 112, first paragraph, written description
requirement, under said heading or submit argument with respect to this
ground under the heading “Argument.” See 37 C.F.R. § 41.37(c)(1)(vi) and
(vii) (September 2004).
The Brief filed August 12, 2005, also addressed only the ground of
rejection under 35 U.S.C. § 103(a) under said headings (Br. 3-9). See 37
C.F.R. § 41.37(c)(1)(vi) and (vii) (2005).
The Examiner’s Answer mailed November 4, 2005, sets forth both
grounds of rejection and does not indicate that Appellant failed to request
review and present argument with respect to the ground of rejection under
35 U.S.C. § 112, first paragraph, written description requirement, in the
Brief filed August 12, 2005 (Answer 3 and 5). Indeed, the Examiner
erroneously states that “appellant’s statement of the grounds of rejection to
be reviewed on appeal is correct” (Answer 2).
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Appeal 2006-1502
Application 10/288,027
37 C.F.R. § 41.37(c)(1)(vi) and (vii) (2005) provide that the Brief
must set forth a “statement of each ground of rejection presented for review”
and “[t]he contentions of appellant with respect to each ground of rejection
presented for review in paragraph (c)(1)(vi) of this section,” respectively.
See also MPEP § 1205.02 (8th ed., Rev. 3, August 2005). Where Appellant
does not present a ground of rejection for review in the Brief, the appeal is
considered to be withdrawn with respect to that ground and the “withdrawal
is treated as an authorization to cancel the withdrawn claims.” MPEP §§
1214.05 and 1215.03 (8th ed., Rev. 3, August 2005).
37 C.F.R. § 41.37(d) (2005) provides that Appellant will be notified
of any deficiency in the Brief under the rules and provided with the
opportunity to correct the deficiency. See MPEP § 1205.03 (8th ed., Rev. 3,
August 2005).
Accordingly, the Examiner is required to take appropriate action
consistent with current examining practice and procedure to notify Appellant
of the deficiency in the Brief filed August 12, 2005, with respect to the
ground of rejection under 35 U.S.C. § 112, first paragraph, written
description requirement, and provide Appellant with the opportunity to cure
the same in order to avoid withdrawal of the appeal and its consequences
with respect to appealed claims 7 and 8, with a view toward placing this
application in condition for decision on appeal with respect to the issues
presented.
This remand is not made for the purpose of directing the Examiner to
further consider the grounds of rejection. Accordingly, 37 C.F.R.
§ 41.50(a)(2) (2005) does not apply.
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Appeal 2006-1502
Application 10/288,027
We hereby remand this application to the Examiner, via the Office of
a Director of the Technology Center, for appropriate action in view of the
above comments.
REMANDED

cam

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